Claim 1 of the main request read:
1. A detergent composition comprising
(a) 15 to 40% by weight of an anionic surfactant,
(b) 0.5 to 5% by weight of a chlorine scavenger,
(c) a protease whose α-keratin-hydrolyzing activity at 10°C is not less than 0.09x10^–3 μg/mPU·min and
(d) a protease whose α-keratin-hydrolyzing activity at 10°C is less than 0.09x10^–3 μg/mPU·min,
wherein (c)+(d)=0.01 to 0.5% by weight (as powdered enzyme product), (c)/(d)=1/5 to 5/1 and [(c)÷(d)]/(b)=1/100 to 1/2 (weight ratio as powdered enzyme product), and a polyoxyalkylene alkyl or alkenyl ether whose HLB (Griffin’s method) is 11.5 to 17.
The Board first deals with the validity of the priority claim:
[1.1.1] It is established jurisprudence of the Boards of Appeal of the EPO that the priority of a previous application in respect of a claim in a European patent application in accordance with A 88 is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole (see G 2/98 [headnote]).
It is undisputed that claim 1 as granted reads as the combination of claims 1 and 3 of document D20, which is the certified English translation of the Japanese priority document of the patent in suit.
However, it is also undisputed that PU, one of the units contributing to the value of the α-keratinhydrolyzing activity expressed as μg/mPU·min, which characterizes in claim 1 both proteases (c) and (d), is defined differently in the patent in suit and in document D20. Precisely, the patent in suit defines 100PU as the amount of protease that produces acids-soluble peptides equivalent to one micromole of Ltyrosine per minute in the measurement of caseinhydrolyzing activity of the description whilst document D20 defines for the same measurement 1 PU as the amount of enzyme that produces acid-soluble peptides equivalent to one millimole of L-tyrosine per minute.
Therefore, because of this different definition of PU, the α-keratin-hydrolyzing values of a protease measured by using the respective definition of PU differ of the factor 10^5, i.e. the limits of the α-keratin-hydrolyzing activity which characterize proteases (c) and (d) in each claim 1 of the patent in suit and of the priority document, even though numerically apparently identical, differ in reality of a factor 10^5 because of the different definition of PU.
Since the [patent proprietor] submitted that the definition of PU in the patent in suit is correct and that the definition in the priority document is erroneous and should have been the same, it should be evaluated if the skilled person would have derived the definition of PU used in the patent in suit directly and unambiguously, using common general knowledge, from the whole content of document D20 as a whole.
[1.1.2] It has not been contested by the [patent proprietor] during oral proceedings that the skilled person would not have been able to notice that the definition of PU in document D20 is erroneous by simply reading the content of this document. In fact, the Board remarks that both the measurements of the α-keratin-hydrolyzing activity and of the casein-hydrolyzing activity of the description in which the definition of PU is used are not recognized standard methods but are methods set up by the [patent proprietor] for the specific needs of the present invention. Moreover, there did not exist at that priority date any widely recognised standard values for the α-keratin-hydrolyzing activity or the casein-hydrolyzing activity or a recognised standard definition for the PU belonging to the common general knowledge of the skilled person. Therefore, the skilled person, even considering his common general knowledge, would not have been able to recognise any error in the definition of PU or in the values of α-keratin-hydrolyzing activity simply by reading document D20.
[1.1.3] The [patent proprietor] submitted that the skilled person, in applying his common general knowledge to the teaching of document D20, for example by repeating the examples of the priority document and controlling the α-keratin-hydrolyzing activity of the proteases used in these examples, would have noticed that the values of α- keratin-hydrolyzing activity measured by means of the method indicated in the description of document D20 making use of the definition of PU given hereinabove do not correspond with the values indicated in the examples and would not satisfy at once the requirements of the claim for both proteases (c) and (d). Moreover, by comparing the measured results with those of the example, he would have found that the value had to be corrected by a factor of 10^5 in order to comply with the requirements of the claim for both proteases (c) and (d) and that the error could arise from the erroneous definition of PU.
However, the Board remarks that according to the established jurisprudence of the Boards of Appeal of the EPO the common general knowledge of a skilled person is normally represented by encyclopaedias, textbooks, dictionaries and handbooks on the subject in question or even patent specifications and scientific publications in the case that the field of research is so new that technical knowledge was not available from textbooks (see case law of the Boards of Appeal of the EPO, 5th edition 2006, I.C.1.5). Therefore, it cannot encompass the application of tests like the measurement of the α-keratin-hydrolyzing activity of document D20 which is an integrative part of the invention itself and relates to parameters which are not standard in the prior art as explained hereinabove.
Therefore, the reworking of an example and especially of a method which is not a standardized one and is not reported in encyclopaedias, textbooks, dictionaries and handbooks cannot be considered to be the application of common general knowledge.
As a consequence, the mere fact that it is necessary to carry out a test, which is not part of common general knowledge, in order to find out whether the definition of PU in document D20 is erroneous makes clear that the different definition of PU used in the patent in suit is not derivable directly and unambiguously, using common general knowledge, from the whole content of document D20.
Therefore, the Board concludes that claim 1 of the patent in suit relates to an invention which is different from that disclosed in document D20 and cannot benefit from the claimed priority date of 17 March 1999.
I shall come back on this decision tomorrow.
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